Trade-marks

Riches McKenzie and Herbert LLP has numerous professionals who are registered Trade-mark Agents authorized by Industry Canada to practice before the Canadian Trade-marks Office.

In addition through our longstanding relationships with associates around the globe, we are able to assist our clients in securing trade-mark rights not only in the United States Trademarks Office, but globally.

Practical Advice

Although the Canadian Trade-marks Act awards trade-mark rights between competing applications on the basis of the earliest of the use or filing dates, the Trade-marks Office has adopted a first-in first-out approach to examination. As such it is advantageous for an applicant to apply for registration of trade-marks in Canada as early as possible, even if extensive use of the mark has occurred, as this may avoid the necessity of having to oppose a previously filed third party application which alleges a later use date.

It is possible to claim priority to a foreign trade-mark application first filed in a foreign country where the applicant has a real and effective commercial establishment, up to six (6) months earlier.

Trade-mark Requirements to File in Canada

The following information is required to prepare and file a trade-mark application in Canada.

1. APPLICANT'S FULL NAME AND ADDRESS. (In the case of a corporation, indicate the name as it appears in the Charter).
2. APPLICANT'S PREDECESSORS (if applicable, and in successive order).
3. WORD(S) TO BE REGISTERED.
4. IF A DESIGN IS TO BE REGISTERED, send a copy of the trade mark from which drawings can be prepared, or send two black and white drawings on sheets exactly 2-3/4 inches x 2-3/4 inches or 7 cm x 7 cm (these may be photocopies).
5. STATEMENT OF WARES OR SERVICES with which the mark is associated.
6. THE DATE OF FIRST USE OF MARK IN CANADA or confirm the mark is not yet in use in Canada.
7. REGISTRATION IN THE COUNTRY OF ORIGIN. If the application is to be based on registration in home country, and use in any country, the COUNTRY, DATE AND NUMBER OF REGISTRATION, COUNTRY OF USE AND STATEMENT OF WARES/SERVICES. Before allowance, a certified copy of the home registration, and an uncertified English or French translation, must be filed. If country of origin is the United States, state whether the registration is on the Principal or Supplemental Register.
8. APPLICATION IN THE COUNTRY OF ORIGIN. If the application is to be based on application in home country, and use in any country, the COUNTRY, DATE AND NUMBER OF APPLICATION, COUNTRY OF USE AND STATEMENT OF WARES/SERVICES. Before allowance, a certified copy of the home registration that is granted from the home application, and an uncertified English or French translation, must be filed.
9. PRIORITY CLAIM - provide filing date, serial number and list of wares/services of priority application. A copy of the priority document is not required.